Appeal No. 2001-1898
Application No. 08/835,945
insofar as Fox is concerned, but not as to Stenberg, which does
disclose that since the ends of bar 6 "have shapes which join
[sic] end surface of the handle 2, the shaft cannot injure the
hand that grasps the handle" (page 3, last two lines).
On pages 11 to 12 of the brief, appellants argue that
snagging is not relevant to their invention, and that the ends of
their disclosed bar are curved for other reasons. This is not
persuasive of unobviousness, however, because "[a]s long as some
motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the
inventor." In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992).
Nevertheless, we will not sustain rejection (4). As is
evident from the above-quoted paragraphs from page 6 of the
examiner's answer, the rejection is predicated on the assumption
that "in the event a cylindrical handle is to be utilized," but
the examiner has cited no reference which would have suggested to
one of ordinary skill utilization of a cylindrical tool handle;
Fox would not do so, since it relates to universal joints, not
tool handles. The mere fact that the tool handle of Stenberg
could be modified to be cylindrical does not make the
11
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007